All Things Pros focuses exclusively on patent prosecution. The blog uses PTAB decisions, and the prosecution history that led to appeal, to discuss good and bad strategies for handling 102, 103, 101 and 112 rejections. Claim construction using Broadest Reasonable Interpretation is also a major focus. And sometimes you'll find prosecution topics such as after-final, RCE, and restriction practice.

Monday, May 31, 2010

Takeaway: In the recent decision In re Vaidyanathan (2009-1404, Fed. Cir. 2010)(non-precedential), the Federal Circuit reviewed a BPAI decision and vacated an obviousness rejection because of insufficient fact finding and reasoning in the record. The opinion, authored by Judge Newman, acknowledges the place of common sense and logic in an obviousness rejection, but puts the BPAI on notice that "KSR did not remove the need to anchor the analysis in explanation of how a person of ordinary skill would select and apply the teachings of the references.” This case is non-precedential, so it's not binding – but the Federal Circuit Rules do allow cites to non-precedential opinions.

Details: I'm not going to cover the details of the case. Instead, I'll give you some quotes which might be of use in your next Appeal Brief. If you do want to read more about the case, you can find a short summary of it here on the IP Spotlight blog, or a longer post here on the IPWatchdog blog.

My two cents: I think In re Vaidyanathan is important, though it's really not new law. The Federal Circuit ruled back in 2001 that the BPAI must "point to some evidence in the record in support of [its] findings" rather than "simply reach conclusions based on its own understanding or experience – or on its assessment of what would be basic knowledge or common sense." In re Zurko, 258 F.3d 1379 (Fed. Cir. 2001)("Zurko IV").

I see In re Vaidyanathan as a post-KSR update to Zurko. The Federal Circuit found that the BPAI made two mistakes in Vaidyanathan. First, the Board found that a particular feature was not explicitly taught but was nonetheless implicit. The Federal Circuit said more detail was needed on this implicit finding:

The Board cited no other evidence indicating the level of ordinary skill in the relevant art, or explaining why a person of ordinary skill would view this autopilot aspect as an implicit teaching of Biggers.

[T]he Board did not persuasively explain how a person of ordinary skill in the art would conclude that Biggers taught that the trajectory commands produced by the neural network are to be input into a separate autopilot function.

The second BPAI error was simple reliance on the "predictable use" rationale from KSR. The BPAI found that:

To combine the feature of a neural network for determining the optimal trajectory as taught by Biggers with the missile guidance system of Johnson to attain the advantages of each would have been obvious to a person of ordinary skill in the art, as this would involve nothing more than the predictable use of prior art elements according to their established functions.

The Federal Circuit said a mere reference to the predictable use rationale was not enough:

[W]hile KSR relaxed some of the formalism of earlier decisions requiring a “teaching, suggestion, or motivation” to combine prior art references, it did not remove the need to anchor the analysis in explanation of how a person of ordinary skill would select and apply the teachings of the references. See, e.g., id. at 417 ...

The Federal Circuit provided this nice summary of the evidentiary requirement for obviousness findings post-KSR:

Where, as here, prior art references are cited to support an obviousness rejection, the references themselves need not in every case provide a “specific hint or suggestion” of the alteration needed to arrive at the claimed invention; the examiner’s analysis “may include recourse to logic, judgment, and common sense available to a person of ordinary skill that do not necessarily re-quire explication in any reference or expert opinion.” Perfect Web Techs. v. InfoUSA, Inc., 587 F.3d 1324, 1329 (Fed. Cir. 2009). In these cases the examiner should at least explain the logic or common sense that leads the examiner to believe the claim would have been obvious. Anything less than this results in a record that is insulated from meaningful appellate review. Zurko, 258 F.3d at 1386.

I plan to paste this quote into my Appeal Brief the next time I get a conclusory statement of obviousness which doesn't explain why or how.

The Applicant submitted a swear behind declaration which alleged to show conception and reduction to practice before the effective date of the reference. However, the supporting exhibit consistently described the invention in the future tense: "My approach would use the power of the Internet to develop ... " ; "Individuals therefore would be the main customers for this service." "I could envision linking such data ..." Furthermore, the supporting document specifically described the invention as being in a "conceptual phase."

The Board found that by discussing the invention in the future tense and as a concept, the document "at best shows conception," not reduction to practice. Since the declaration failed to show due diligence, the Applicant failed to remove the reference as prior art.

Takeaway: The BPAI upheld a written description rejection based on the Applicant's arguments that the claimed element would be obvious to a POSITA reading the disclosure and that a POSITA would understand that the pages should and would be secured to the front and back cover as claimed. In arguing written description, stay away from what a POSITA "should understand" and what is "obvious," and focus on what the disclosure actually teaches to a POSITA.

The claim on appeal was directed to an "interactive storybook." The claimed book included a binder interconnecting the front and back covers, and pages of an exposed story. The claims also required the binder to secure the pages to the front and back covers.

These claim limitations were added during prosecution, along with a corresponding amendment to the specification. The Examiner rejected the amended claim under § 112 1st, written description. The Examiner found that the originally filed spec/drawings showed an element connecting the front and back cover, but this same element did not secure the pages to the cover. Instead, the pages were stacked upon the element.

Having no literal support in the spec for the claim limitation, the Applicant tried to argue implicit support:

Here the original specifications, in addition to the drawings, disclosed by text enough to convey to a person skilled in the art that the pages were secure ... Read together, a person skilled in the art would surely understand that "pages'' in a "storybook" disposed between the book covers were secured to the covers. Likewise, a person skilled in the art would understand that "a story part in a traditional location" of a "storybook" would mean the pages secured to the book's covers. In short, a person skilled in the art - or any person with a passing familiarity with books, for that matter - would assume that the pages of a book are attached the covers.
...
Perhaps the Examiner is suggesting that the additions are new matter because the originally-filed specifications did not show "any way" that the pages were secured. But, in fact, as discussed in detail in Section 2.2.2, below, the original drawings and specification did adequately show how such pages were secured. Alternately, the Examiner may be indicating that the fact that the pages are secured was not disclosed in the originally-filed specification and drawings. However, it would be obvious to one skilled in the art from reading the originally-filed specifications and drawings that the pages should and would be secured to the front and back cover.

The Board pounced upon the "it would be obvious" language, and noted that this is not the proper standard:

"It is not enough to satisfy the written description requirement that the claimed subject matter would have been obvious to a person of ordinary skill in view of the written description. See ICU Medical, Inc. 558 F.3d at 1377; see also Regents of the Univ. of Cal., 119 F.3d at 1566–67."

The Applicant asked for a rehearing, arguing that the Board had misapprehended the "it would be obvious" argument:

Appellant was not contending that the securing of the pages by a binder would be obvious to one skilled in the art in light of the originally-filed specifications, or that the specifications rendered the page binding "obvious" under a 35 USC 103 analysis. Rather, it would be "obvious" to a person skilled in the art that the securing of the pages by a binder was in fact disclosed by the originally-filed specification.

In the Decision on Rehearing, the Board upheld the rejection, this time focusing on the "would and should" language of the original argument:

Looking to the purportedly misapprehended statement, Appellant is arguing that a person of ordinary skill in the art would understand that “the pages should and would be secured to the front and back cover,” as contrasted to arguing that a person of ordinary skill in the art would understand from Appellant’s Specification that the pages are secured to the front and back cover. Appellant’s argument fairly implies that the written description requirement does not require actual disclosure, but rather may be met by the perception of a person of ordinary skill in the art of what the disclosure “should and would” include.

My two cents: Maybe the Applicant was reading too much into the spec and would have lost anyway. But it seems that the Applicant gave the Board something to find fault with by couching the argument in terms of obviousness and using the modal verb "would."

Related posts: The reasoning used by the Board to uphold a written description rejection reminds me of that used in Ex parte Abdel-Hafez, where the Applicant said the claim element was "implied" by the disclosure.

Monday, May 24, 2010

Takeaway: Case law from the BPAI suggests that when a POSITA could draw one of two different inferences from the implicit teachings of a reference, but not enough information is present to determine which one, then this is not enough for anticipation. However, case law also suggests that when the number of inferences a POSITA could draw from the implicit teachings is relatively small, the feature may still be obvious.

Details: There seems to be something about negative limitations that leads to a rejection even when the reference is silent. In Ex parte Mallis, the negative limitation at issue was "wherein is a torque is applied such that plastic deformation of the positive stop torque shoulder does not occur upon final makeup." The Applicant argued that the reference was silent about deformation, but did teach bending of the shoulder, and that a POSITA would understand this bending to include plastic deformation, which was prohibited by the claim. The Examiner conceded that the reference was silent as to plastic deformation, but argued that the Applicant's inference that the reference taught the opposite of the claim was wrong. The Examiner said a POSITA would not conclude that plastic deformation would occur. The Board characterized both assertions as speculative, and found no anticipation: "If Klementich lacks adequate disclosure to determine whether plastic deformation occurs, then it also lacks adequate disclosure to determine that plastic deformation is avoided."

Ex parte Bar-Sadeh involved a claim with a negative limitation: "A diaphragm comprising: a sheet of material formed on a substrate having a hole, the sheet of material covering the hole and including one or more corrugations that are substantially free of defects." The Applicant's position on appeal was simple: the references did not discuss defects, and so did not teach "free of defects." The Examiner's Answer agreed that the reference was silent about defects, then explained why features taught in the reference would "further contribute to corrugations having substantially no defects." The Board said the proper inference to draw from the reference's silence was no defects (as claimed), because the reference was an issued patent with a presumption of operability. Given this legal presumption, case law shifts the burden to the Applicant to show that the corrugations in the reference were defective. [Comment: I think the Board confused operable with defect-free. Surely the diaphragm in the reference could have defects and still operate.]

Several cases show that you can lose on obviousness even when the Board agrees that the silence in the reference would defeat anticipation. Ex parte Bett related to a method of controlling a manufacturing line, and the limitation at issue was storing a digitized image of workpieces in permanent memory. The Board agreed that the reference was silent as to the memory being permanent, but found the claim was obvious since "artisans would have known about permanent as well as volatile memories and the choice of one over the other is dictated by many well known factors."

The Board used similar reasoning in Ex parte Choo. The claim was very concise: "An Internet Key Exchange method, comprising performing an IDE Main Mode in hardware in parallel with system software loading." According to the Examiner, every computer has system software that runs at power up, and because the reference taught that key negotiation occurs at power up, that reference also implicitly taught that key negotiation was performed "in parallel with the system software loading" (as claimed). The Applicant argued that the reference was silent about the timing of the session key negotiation, and that the Examiner had "leapt to a conclusion that was unsupported by the reference." The Board agreed that the reference was silent as to whether the negotiation and the system software load occurred sequentially or concurrently. However, the Board found that it would be obvious to try both options.

In another case involving a negative limitation, the Board not only agreed the limitation wasn't taught, but also found the claim not obvious. The claim in Ex parte Gragg
involved coordinating access to a storage device through an "uncoordinating communication protocol," negative because the Applicant argued this meant "protocols that do not provide notice of access to other protocols or devices." The Examiner's position was that the primary reference taught clients with different protocols, and that these clients could complete for access without notifying other clients. The Applicant's position is that different doesn't mean
uncoordinating, and these protocols could be coordinating protocols.

As a preliminary matter, the Board found that the reference was silent about whether protocols coordinated or not. Notably, the Board specifically rejected the idea that the silence in the reference taught the limitation "by negative implication. The Board's obviousness analysis was interesting. The Board noted that if the issue was viewed as a choice between two protocols (coordinating and uncoordinating), the claim was obvious under KSR's "finite choices" rationale, assuming there was a design need or market pressure to solve the problem. But the Board framed the issue differently:

[T]here may be other types of protocols that could include attributes of both coordinating and uncoordinating protocols. As such, we cannot say that there would be a finite number of identified, predictable solutions, let alone that it would have been obvious to try them to arrive at the claimed invention.

Related posts: I first discussed this topic in a post about Ex parte Grath, a case in which I strongly disagreed with the inference that the Board drew from silence in a reference. I followed up on the topic in this post, in which I discussed two Federal Circuit cases that seem to be the most relevant to silence in a reference. Note that one of those cases (Upsher-Smith Labs., Inc. v. Pamlab) discusses multiple inferences. But in Upsher-Smith, the POSITA had enough information to infer that both options are taught, as opposed to not having enough info to know which inference to draw.

Sunday, May 23, 2010

Do you have an application in which you can't get an answer from the Examiner or his SPE? Consider trying out the new PTO Ombudsman pilot program. You can find the announcement about the Ombudsman program here.

Here's how a summary of how the process works. You submit your issue
via an electronic form on the Ombudsman page. You get a call back from
the ombudsman within one business day. The ombudsman forwards the issue
to "an official in the
appropriate organization that is best suited to resolve the issue
(e.g., Technical Support Staff, Supervisory Patent Examiner, or TC
Director)." The ombudsman follows up on the issue regularly. The target
is to have a resolution within 10 business days.

The PTO stresses that before using the program, you should try normal channels first – Examiner, then SPE. Also, it's for purely procedural issues – substantive issues should be handled by an appeal or a petition.

The info provided by the PTO doesn't say exactly what matters are appropriate for this program. Here's some sheer speculation on my part. Trouble in scheduling an interview? You filed a Reply Brief six months ago and the Examiner hasn't forwarded the case to the BPAI? The Issue branch calls six months after you paid the issue fee to say you need to file an RCE to fix a problem with improper claim dependency, yet the Examiner says he can't fix it because the issue fee has already been paid? [This last one happened to me, and luckily it resolved itself.]

This program is one of Director Kappos' many new directives aimed at improving the process for patent applicants. He's mentioned several others on his blog, such as re-engineering the MPEP and streamlining the non-compliant appeal brief process. I'm anxious to see how the Ombudsman program will work out.

The PTO's Electronic Business Center has announced a backup system which allows e-filing during an unscheduledoutage of the primary portal to EFS-Web. This backup system works like EFS for Unregistered Filers – no certificate at login, no dropdown list of customer numbers, and no saved submissions. As far as I'm concerned, those are just minor inconveniences. The only real gotcha I see is that online payment must be completed at time of submission.

Details are available from the PTO here. On that page is a link to the contingency server, which you'll want to bookmark.

I first heard about this on Carl Oppedahl's excellent EFS listserv. You can get info here about signing up for the EFS mailing list and/or the companion PAIR list.

Wednesday, May 19, 2010

Takeaway: Can a reference that is silent about a limitation can nonetheless anticipate the limitation? It is possible. It depends on how the reference would be understood by a POSITA, and specifically, what inferences a POSITA would draw from the silence. This usually comes up in the context of a negative claim limitation, e.g., a reaction occurring "without application of heat." The mere fact that the reference is silent about the application of heat, or even silent about temperature, is not enough. However, if a POSITA reading in between the lines understands the reference as a whole to describe a reaction at room temperature, then the reference does indeed anticipate "without application of heat."

Details: In the general topic of anticipation by silence in a reference, there are two lines of cases. One deals with inherency, and the other with implicit teachings. For purposes of this post, I'm not interested in inherency. Once you realize that the Examiner's position on the silent reference is based on inherency, you can deal with that by applying inherency case law.

I'm interested instead in cases where the reference is silent as far as an explicit teaching goes, but where the real issue is the implicit teachings. Several Federal Circuit cases that discuss "silence" in a reference boil down to the same general principle: whether a reference that is silent on a point nonetheless anticipates depends on how the reference would be understood by a POSITA, and specifically, what inferences a POSITA would draw from the silence.

One case that is often cited in discussions about silence in a reference is Upsher-Smith Labs., Inc. v. Pamlab, 412 F.3d 1319, 1322 (Fed.Cir.2005). Upsher-Smith holds that a teaching that a step is optional anticipates a claim that specifically excludes the step. The way I see it, the reference in Upsher-Smith is best understood as teaching two embodiments: one that includes the step; and one that excludes the step. Far from being completely silent on the claimed limitation, the reference in Upsher-Smith comes close to an explicit teaching of the claimed element.

The Federal Circuit case that I think best explains how silence in a reference can nonetheless anticipate is In re Baxter Travenol Labs, 952 F.2d 388 (Fed. Cir.1991). In Baxter Travenol, there was no express teaching of the claimed limitation, but the court found that a POSITA would have nonetheless understood the reference as implicitly teaching the limitation. The claim in Baxter Travenol recited two bags for collecting and storing blood, each bag made of a different specific material. Instead of specifically stating the material for the donor bag, the reference instead described the bags as compared to existing technology. A POSITA could draw an inference about the material of the donor bag from this comparison:

In describing its blood bag system, the Becker document makes two references to then-available commercial blood bag systems. The most significant reference is on page 49, where Becker describes his double blood pack system design as "very similar to [Baxter] Travenol's commercial, two bag blood container. The exception is that the secondary transfer pack was a 350 ml Teflon container...." ...

Testimony ... established that Baxter's commercial systems during this time period all contained a primary bag plasticized with DEHP. Therefore, since Becker referred to Baxter's commercial system and Baxter's commercial systems utilized a
DEHP-plasticized primary bag, it is clear that one skilled in the art would have known that Becker was referring to a DEHP-plasticized primary bag. That fact, coupled with Becker's disclosure that the second bag was made of Teflon®, leads to the unmistakable conclusion that the claims at issue were anticipated.

In a district court case on this topic, the court cited Upsher-Smith and In re Baxter Travenol and then found that the reference, though silent, implicitly disclosed the claimed limitation.

Innovatit also argues that it limits its process by requiring that it be conducted "without application of heat," a claim limitation absent from JP '156. ... Here, there is no indication that JP '156 contemplates the addition of heat, and indeed, when the inventor of the Innovatit process himself tried to recreate the results of the process taught in the Japanese reference, he performed his trial at ambient temperature. The Board thus concluded that one skilled in the art would have understood the process in JP '156 to have been carried out at ambient-temperature, and there is substantial evidence to support that factual finding. The negative, ambient-temperature limitation of the Innovatit application thus cannot create patentable novelty.Innovatit Seafood Systems, LLC v. Commissioner For Patents, 573 F.Supp.2d 96
(D.D.C. Aug 29, 2008) (NO. CIV.A.06-0822 JR, CIV.A.06-0825 JR)

These implicit disclosure cases shows that, in some fact situations, a POSITA would draw an inference that a claimed limitation is disclosed, despite that the fact that the reference is silent about the limitation. However, these cases also show that the explicit teachings must be such that the POSITA can draw inferences to fill in the gap and thus get to the missing limitation.

Related Posts: In a future post, I'll discuss some BPAI cases dealing with silence in a reference. I commented that Applicants need to deal with implicit teachings of a reference in an earlier post here. And today's post was inspired by comments from an Examiner in response to my earlier post about the BPAI decision Ex parte McGrath. That particular Examiner thought the Board's finding in McGrath – the claim limitation of an instruction executable "without interruption" was taught by a reference that failed to mention interruption – was unexceptionable and was based on commonly known case law. [Despite the lack of a case law cite by the Board.] So I researched the issue to be sure I hadn't missing something important. I'm still convinced that the Board considered the right issue in McGrath (what inference would a POSITA would draw from the lack of a discussion in the reference about interruptibility), but reached the wrong result.

Monday, May 17, 2010

Takeaway: Is there ever a good reason to use claim terms inconsistently in the spec? For example, to say "power" when you mean "voltage"? I'm not sure the drafter/prosecutor of the patent in today's district court case planned it that way, but this inconsistent usage gave the patentee a chance at claims that read on the accused infringer when a straightforward reading would probably fail.

7. A method for facilitating power shutdown protocol of a computing device, comprising the steps of:
... using a seconary cell as a backup portable power supply;
using a boost circuit to increase the power of the secondary cell ...

In the field of electronics, "power" is a term of art, with a specific meaning: voltage multiplied by current. The accused infringer advocated for this construction, but the patentee wanted a more informal definition of power: voltage. According to the patentee, a POSITA would understand that the inventors intended for "power" to mean "voltage" because the specification did not explicitly adopt the ordinary meaning, and the specification also used the two terms loosely and interchangeably.

A magistrate judge originally assigned to do claim construction adopted the patentee's interpretation. But when the accused infringer objected, the court reversed and adopted the plain and ordinary meaning to a POSITA: voltage multiplied by current.

The court found that the spec neither explicitly adopted nor explicitly rejected the ordinary meaning, and the patentee's own expert admitted that some portions of the spec did use the ordinary meaning. The court also rejected the idea that "power" and "voltage" were used interchangeably in the spec. As support for this argument, the patentee pointed to various passages that described the power supply circuit solely in terms of volts (e.g., "5 volt power supply circuit"). But the court found that other portions of the spec clarified this usage by describing the circuit in terms of a combination of power and voltage (e.g. "steady 5 volt DC [direct current] power"). Thus, the spec when read as a whole consistently referred to the circuit's power output as a combination of both voltage and current.

My two cents: Is there something to be said for using terms inconsistently in your spec? Perhaps if you do this creatively and carefully, it gives you more options later in arguing claim construction. It didn't help the patentee in this case, but that alone doesn't make it a bad idea. After all, the patentee did convince the magistrate judge, and it's entirely possible that a different district court judge would have agreed.

As a patent prosecutor rather than litigator, I'm inclined to be consistent rather than inconsistent. When I'm drafting a spec and find that inventors have used terms inconsistently, I try to figure out what the inventors really meant in each instance, then I make my usage consistent. But perhaps a litigator would prefer a spec that was somewhat inconsistent and thus gave more leeway in claim construction. I'm guessing the patentee here wouldn't have had a case of infringement at all under the ordinary meaning of power, and that's why the patentee came up with this creative line of argument.

I haven't fully thought through this, so I'm not ready to advocate for intentional inconsistency in how claim terms are used in the spec. But I do think it's a valuable exercise to occasionally take off the prosecutor hat and put on the litigator hat.

Thursday, May 13, 2010

Takeaway: You can appeal to the BPAI on a non-final Office Action. You are allowed to present completely new arguments in an Appeal Brief.

Details: Two common misconceptions about the appeal process are related to when you can appeal, and what arguments you can make.

37 C.F.R. 134(a) states the condition for an appeal: "Every applicant, any of whose claims has been twice rejected, can appeal ..." Notice this says nothing about "final" rejection.

One reading of "twice rejected" might be that a particular claim must be twice rejected. Such a reading would prohibit immediate appeal of a rejection of a claim added in the last response.

However, the BPAI has interpreted the rule more liberally, to permit an appeal as soon as the application is twice rejected. The controlling case is Ex parte Lemoine, and the holding of Lemoine is "so long as the applicant has twice been denied a patent, an appeal may be filed." So the commonly held view that you can only appeal on a final rejection is incorrect.

Some practitioners assume that an appeal must be limited to arguments already on the record. While this may be true about appeals in general, it's not true about appeals to the BPAI. That is, there is absolutely no prohibition against arguments that are presented for the first time in an appeal brief.

When I first heard the urban legend "no new arguments in an appeal brief," I spent a lot of time looking in the C.F.R. and the MPEP for a statement to this effect. I never found one. Nor did I find a statement explicitly permitting new arguments. Since then, I've conferred with other experienced appeal practitioners, who assured me that new arguments are in fact permissible.

The best hard evidence I can point to is found in the record of the rule making process for the current rules (here). During this process, the PTO provides answers to comments submitted by the public. Some of these answers refer specifically to new arguments in appeal briefs.

Many appellants are making new arguments for the first time in their appeal brief apparently stimulated by a former change to the appeal process that inserted the prohibition on new grounds of rejection in the examiner’s answer).

One comment suggests that the new arguments are necessary in the appeal brief because the conferees and supervisors are more experienced than the examiner and if the case proceeds to the Board, the audience is an APJ, who has quite different qualifications than either the conferee or the supervisor. Moreover, the comment suggests that the rule is unnecessary because nothing in the rule prevents the examiner from responding to new arguments raised in the appeal brief.

Since these answers are provided by the PTO, I view this as implicit acknowledgment
that the practice is permissible.

Monday, May 10, 2010

Takeaway: Many claims include entities with more than one instance ("a plurality of widgets"). When the claim involves relationships between multiple entities with multiple instances, getting the claim language right can be challenging. For example, suppose the claim includes a plurality of widgets, a plurality of wikis, and links between the two. Without careful thought, the claim is likely to be ambiguous about whether a link exists between each widget-wiki pair, or between one particular widget and multiple wikis. In fact, such claims might even read on one link between the two groups, rather than links between particular widget-wiki pairs. Today's district court case shows how this sort of ambiguity gives parties something to argue about in a claim construction dispute.

The claims at issue were directed to power converters. One of the limitations at issue was a controller that generated a discharge-time signal by "multisampling a voltage signal ... during an off-time of said switching signal." On its face, the limitation is ambiguous:

multiple samples during each off-time?

one sample during each off-time, with multiple off-times resulting in multiple samples?

The patentee argued for the first interpretation, while the accused infringer advocated for the second. [Because the patentee's is a narrower construction, I'm guessing that the broad construction leaves the claim vulnerable to an invalidity challenge.]

In support of the broad interpretation, the accused infringer relied on the basic claim construction principle "A means one or more." Thus, by using "AN off-time" the claim covers taking samples during more than one off time, which results in multiple samples. The accused infringer also relied on portions of the spec which show a comparator that uses only one sample per cycle to determine when the transformer has been discharged.

The patentee argued that "the claimed circuit could not perform its desired function if it operated in the manner required by [the accused infringer]". Specifically, the claimed discharge time signal results from taking multiple samples until the last one is different enough from the previous one to indicate the end of the discharge time. The patentee countered the accused infringer's comparator argument too. While agreeing that the comparator holds one sample per cycle, the patentee explained that precisely which sample is held by the comparator is determined by taking multiple samples during a single cycle.

The court adopted the patentee's construction. "While the claim language itself is ambiguous, the specification demonstrates that the voltage signal is sampled at least two times for each of the switching signal's off-times in order fo the correct sample to be generated ... There is no teaching as to how the circuit would operate if the voltage signal and discharge time were sampled only once during an off-time."

My two cents: I think the judge reached the right answer here. But I also think that the wording of the claim gave the losing side ammunition to argue. When possible, I'd rather have a claim that more clearly expresses the nature of the sample-cycle relationship so that going to the spec isn't necessary.

How about:

multisampling a voltage signal within each of a plurality of off-time cycles of said switching signal.

OK, "each" is a very limiting word, so I'll try to avoid it, while still reducing the ambiguity about multiple-across-all-cycles vs. multiple-in-a-single cycle.

How about:

multisampling a voltage signal within at least some of a plurality of off-time cycles of said witching signal.

I doubt my claim is bullet-proof, but I think it improves on capturing the feature asserted by the patentee.

Sunday, May 9, 2010

Many practitioners use the term "prosecution history estoppel" to refer to any limits on claim scope that arise from actions taken during prosecution. It turns out that, strictly speaking, the doctrine is more narrow than this.

Prosecution history estoppel is limited to the doctrine of equivalents context — actions taken during prosecution estop the patentee from invoking infringement under doctrine of equivalents. The related doctrine of prosecution disclaimer affects claim construction — the patentee disclaims scope through actions taken during prosecution.

If you want to know more, read this article at IP Today. And if you can't get to that article because it's "subscriber only", here is a CLE paper discussing disclaimer. The CLE paper is much longer, but the discussion of disclaimer vs. estoppel is on the first page of the main article.

Monday, May 3, 2010

Takeaway: When an Examiner applies a § 102(e) reference as of its priority date, the precedential decision Ex parte Yamaguchi allocates the burden of proof for whether the priority document provides proper support under § 112. Specifically, Yamaguchi holds that "once the Examiner finds a factual correspondence between a U.S. patent or published application and its underlying provisional application, the burden shifts to Appellant to show why this finding is erroneous."

While the majority of the decisions which apply Yamaguchi enforce this "factual correspondence" requirement, a few rely on Yamaguchi to hold that there is no such requirement if the provisional is publicly available (e.g., Public PAIR).

More Details:

It's not clear exactly how much explanation must be included in the "factual correspondence." The Board has found the prima facie case met when the Examiner referred to a specific section of the provisional, then
explained how this provisional section "describes similar if not exact
subject matter" disclosed in the relied-upon § 102(e) reference. (Ex parte Olsen.) In another case, the Board described the Examiner's explanation of the correlation between publication and provisional as "in-depth" (Ex parte Parmelee.) However, in another case the Board characterized the Examiner’s explanation as "terse," but still found the prima facie case met because "the Examiner nonetheless found that both documents show the same subject matter." (Ex Parte Chawla.)

When the Applicant in Ex parte Chawla argued that the provisional wasn't identical to the § 102(e) reference, the Board explained that Yamaguchi did
not require "identity of terms or figures."

In Ex parte Olsen, the Board explained
that the Examiner's prima facie showing was unrebutted because the Applicant did not
specifically address which of the relied-upon portions were not properly supported by the provisional.(Emphasis added.) Many Applicant attempts to rebut the Examiner's prima facie are criticized by the Board as "merely conclusory." For example, the Board in Ex parte Chawla criticized Applicant's statement that the identified portions of the provisional "make no mention whatsoever" of particular claim elements. As another example, the Board in Ex parte Billings explained that a statement "that is totally devoid of explanation or analysis hardly persuades us of error in the Examiner’s factual findings pertaining to Rawatand its prior non-provisional application."

While the cases above are a straightforward application of Yamaguchi, in two other cases the Board did not enforce the Yamaguchi requirement of "factual correspondence" between a § 102(e) reference and its provisional.

In Ex parte Zheng, the Final Office Action did not refer to any particular portion of the provisional. In the Appeal Brief, the Applicant maintained that the reference was not prior art because the Examiner had not met his burden of demonstrating support in the provisonal.

Ignoring the Yamaguchi requirement, the Board summarily found that the Examiner had established a prima facie case, and that the Applicant had not rebutted this presumption because the Appeal Brief failed to identify which claim limitations were not supported the provisional. Finally, the Board noted that the same paragraph of the § 102(e) reference that was relied on by the Examiner was also present in the provisional – thus making an implicit finding that the provisional did support the reference. What the opinion failed to note was the provisional was 53 pages long. Perhaps searching for a matching paragraph in a 53 page document is not too burdensome for the Applicant – but what if the provisional was 500 pages long?

The Board also seemed to ignore the Yamaguchi requirement in Ex parte Hartigan. The Board criticized the Applicant for not obtaining the provisional through Public PAIR and determining whether the subject matter relied upon in the § 102(e) reference is supported by the provisional:

[T]he Appellant [does not] explain why the Appellant could not have performed this simple task during all this the time since the Appellant was first made aware of Aquila. Cf. Ex parte Yamaguchi, 88 USPQ2d 1606, 1613 (BPAI 2008) (precedential) (The Examiner had noted that the provisional application was readily available in the PAIR system.) Accordingly, we see no good reason to shift the burden now back to the Examiner to provide the argued-for showing.

My two cents: Don't bother appealing if the Examiner has pointed to particular portions of the provisional and you haven't yet reviewed those portions to determine whether the Examiner is right. It's a harder call if the Examiner has not met his burden by explaining which portions of the provisional correspond to the relied-upon portions of the § 102(e) reference. You could appeal without saying more, and hope the Board applies Yamaguchi strictly.

I think the cases which ignore the factual correspondence requirement in Yamaguchi are wrongly decided, because I view the burden shifting requirement in Yamaguchi as clearly flowing from the Examiner's finding of a correspondence between reference and provisional, and unrelated to the dicta about public availability. (See Ex parte Yamaguchi, p. 18.) So if I lost at the Board because this "factual correspondence" requirement was ignored, I'd be inclined to file a Request a Rehearing with the Board. I'll be keeping an eye out for BPAI rehearings to see if anyone else does so.

Sunday, May 2, 2010

Speaking as someone who drafts patent applications and also looks at those drafted by others, it appears to me to be common patent drafting practice to:

Avoid discussing the prior art.

Avoid discussing advantages of the invention — even when qualified by "embodiments."

Avoid a clear statement of the inventive aspect(s).

The specific reasons behind these choices are beyond the scope of this post, but suffice it to say that the reasons are grounded in Federal Circuit case law.

Interestingly, there are practitioners out there who go against conventional wisdom, and advocate violating one or more of these rules. Here are three interesting blog posts which not only suggest taking a different approach, but make a case for why their approach is a good idea.

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